To: | Alexandria Investment Group Inc. (jmark@gilbreth.org) |
Subject: | U.S. Trademark Application Serial No. 88208818 - AMAZON - AAS/03 |
Sent: | May 29, 2020 11:58:48 AM |
Sent As: | ecom100@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88208818
Mark: AMAZON
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Correspondence Address: |
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Applicant: Alexandria Investment Group Inc.
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Reference/Docket No. AAS/03
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: May 29, 2020
On November 4, 2019, action on this application was suspended pending the disposition of U.S. Application Serial No. 88146233. The referenced prior-pending application has since registered. Therefore, registration is refused as follows. The Section 2(d) refusal below includes this most recent registration, as well as registrations cited in the Office action issued March 4, 2019. In addition, the following requirements are continued and maintained: (1) Additional Information Required; and (2) Identification of Services.
SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Comparison of the Marks
Applicant’s mark is AMAZON.
Registrant’s marks are as follows:
Reg. No. 2832943 – AMAZON
Reg. No. 2837138 – AMAZON.COM
Reg. No. 5508999 – AMAZON and design
Reg. No. 5906636 – AMAZON
Applicant’s mark and the marks in the ‘943 and ‘636 registrations are identical in appearance, sound and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant and registrant’s respective goods and/or services. Id.
Regarding the mark in the ‘138 registration, namely, AMAZON.COM, applicant’s mark merely deletes the top-level domain identifier “.COM.” This deletion does not obviate the likelihood of confusion. Applicant’s mark is identical to the dominant portion of registrant’s mark.
Regarding the ‘999 registration, the design element in registrant’s mark does not obviate the likelihood of confusion. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
In view of the above, the parties’ mark are confusingly similar.
Comparison of the Services
Registrant’s services are as follows:
Reg. No. 2832943 – AMAZON – Electronic retailing services featuring, among other things, motor vehicles and parts and accessories thereof
Reg. No. 2837138 – AMAZON.COM – Online retail store services featuring, among other things, motor vehicles and parts and accessories thereof
Reg. No. 5508999 – AMAZON and design – Retail store services featuring, among other things, automotive and industrial supplies
Reg. No. 5906636 – AMAZON – “Providing an online marketplace for local professional service providers offering a wide range of home, business, and vehicle services; providing consumer information regarding local professional service providers offering a wide range of home, business, and vehicles services; providing a website where users of an online marketplace provide ratings, recommendations, and feedback on local professional service providers offering a wide range of home, business, and vehicle services”
Applicant’s services and the services in the ‘943 and ‘138 registrations appear to be virtually identical, with the parties offering various types of retail services featuring motor vehicles, as well as parts therefor. Similarly, the vehicle services identified in the ‘636 registration encompass the retail services identified in applicant’s identification.
Regarding the ‘999 registration, applicant’s services are closely related to registrant’s services offering automotive supplies and consumers anticipate that these services are offered by a common source under a common mark.
In further support of the relatedness of the parties’ services, please see the third party webpages of record showing, e.g., retail services featuring motor vehicles and motor vehicle parts.
Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
Applicant’s Arguments and Examining Attorney’s Rebuttal
In applicant’s response filed September 4, 2019, applicant presented arguments pertaining to the Section 2(d) refusal. Applicant’s arguments are not persuasive.
Applicant asserts that the identification of services in at least some of the cited registrations identify services not offered by registrant, and thus appear to question the validity of the cited registrations. A trademark or service mark registration on the Principal Register is prima facie evidence of the validity of the registration and the registrant’s exclusive right to use the mark in commerce in connection with the specified goods and/or services. See 15 U.S.C. §1057(b); TMEP §1207.01(d)(iv).
Thus, evidence and arguments that constitute a collateral attack on a cited registration, such as information or statements regarding a registrant’s nonuse of its mark, are not relevant during ex parte prosecution. See In re Dixie Rests., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); TMEP §1207.01(d)(iv). Such evidence and arguments may, however, be pertinent to a formal proceeding before the Trademark Trial and Appeal Board to cancel the cited registration.
In addition, applicant’s arguments assert priority of use which is similarly not relevant to this ex parte proceeding. See In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971). As noted above, Trademark Act Section 7(b), 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register is prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce on or in connection with the goods and/or services specified in the certificate. During ex parte prosecution, the trademark examining attorney has no authority to review or to decide on matters that constitute a collateral attack on the cited registration. TMEP §1207.01(d)(iv).
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
In view of the above, registration is refused under Section 2(d) of the Trademark Act. If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
ADDITIONAL INFORMATION REQUIRED
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
In the instant case, the specimen of record consists of a storefront with each letter of the proposed mark printed on paper and affixed to the storefront window over additional printed papers bearing the words “AUTO” and “SALES.” The specimen indicates that the photograph was taken in 2005, but the printed pages affixed to the storefront window appear to be temporary in nature.
Additional information/documentation about specimen required. To permit proper examination of the application record for compliance with use in commerce requirements, applicant must respond to the following request for information and documentation about the specimen(s). See 37 C.F.R. §2.61(b); TMEP §814. For the identified services, applicant asserts that the specimen of record shows use of the mark in connection with the identified services in 2005. However, given the temporary nature of the specimen, it is unclear how applicant continued to use the mark in the years since 2005. Accordingly, applicant is asked to provide information as to how the applicant continued to use the mark in commerce from 2005 to the present. Specifically, did applicant convert its temporary signage to permanent signage or can applicant show another type of use of the mark in commerce since 2005? If so, can applicant provide a substitute specimen showing how the mark is currently used in commerce?
IDENTIFICATION OF SERVICES
Applicant may adopt the following identification, if accurate:
Retail outlet featuring parts for motor vehicles; retail outlet featuring parts for motor vehicles, namely, the bringing together for the benefit of others a variety of motor vehicle parts enabling consumers to conveniently view and purchase those goods
An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Questions regarding this Office action may be directed to the undersigned examining attorney.
How to respond. Click to file a response to this nonfinal Office action.
/Karen Severson/
Staff Attorney
Law Office 100
571-272-8285
karen.severson@uspto.gov
RESPONSE GUIDANCE